Where you stand depends on where you sit

I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is. Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC

“Where you stand depends on where you sit” – Nelson Mandela

This is one of my favorite quotes. Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”

What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.

Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.

Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. I offered a lesson on the three eras of Fender ownership, some insight into the essential differences between the Gibson/PRS lawsuit (I was an expert witness for PRS. Gibson lost) and the FMIC trademark applications (we were turned down). There was a paragraph, based on my understanding of the transcripts (mostly public and there for the reading)… on my take of where it all went off the rails for us (CBS’s “most Copied Guitar campaign was the killer IMHO) and of course… a few tidbits of info that Ron could never have known and in a big way, were the drivers for the application in the first place.

Headed up by yours truly, FMIC had a successful “side business” licensing it’s marks to any number of companies in businesses such as apparel, jewelry, video games and the like. Besides the obvious, one of the things a Licensee wants from a Licensor is the assurance that the Licensor actually owns the marks he’s licensing. And, that if questioned, the Licensor would go to the mat to protect their value. There was no doubt in our minds, or in the minds of the public that we owned those shapes (the actual registered names and headstock etc…. were never in doubt) but indeed, like Lee Marvin the day before he was introduced to Marvin Mitchelson, we were whistling past the graveyard on this one. On the other hand, this effort had showed Licensees we were up for a fight and willing to protect our stuff… in the end, in one man’s opinion, it was worth it. Those that did the heavy lifting of files and research are free to disagree!

By the time the ruling came down, I had already left FMIC, but still defend that decision… over and over… It seems people never tire of assuming that I want FMIC to fail (nothing could be further from the truth).

The often-assumed conclusion that this was a costly flyer that squandered mountains of money that could otherwise have been spent making better and more innovative products was at the center of our “discussion.” And, FMIC is no worse off today than it was before the application. Ron and I agreed to disagree on the wisdom of this strategy, because in the law and in marketing — where you stand, really does depend on where you sit.

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Ritchie Fliegler

A voyage of passion, creativity and discovery has led Ritchie to this important principle:
greatness is achieved through critical thinking, responsibility and, fearlessness.
Fearlessness is what's needed to be great. Fearlessness is also whatâ€™s needed to do great
marketing. fearless Marketing is a spirit, a gusto, courage.
Prior to starting fearless Marketing LLCÂ®, Ritchie was a Sr. VP at Fender Musical Instruments
and the Vice President of Marketing at Barrett-Jackson classic car events where his â€œmake it
happenâ€ business approach netted a significant and measurable growth in awareness, gate
attendance and TV viewer demographics â€“ picking up double-digit growth in the 35 and
younger demographic â€“ a major step forward for a business justly concerned with a
â€œgrayingâ€ audience.
In the music world Ritchie has an extensive resume. He is the former senior vice president
of marketing and market development at Fender Musical Instruments Corporation where he
led the charge to make Fender a household name, changing the positioning from a
â€œhardwareâ€ maker for guitarists to â€œThe Spirit Of Rock-N-Roll.â€ Ritchie also spearheaded a
brand-licensing program that brought in millions of dollars of incremental income.
Previous to his tenure in the corporate side of the music industry, Ritchie was a full-time
musician and author of the â€œbest sellingâ€ books, â€œAmps! The Other Half of Rock 'N' Rollâ€ and
â€œThe Complete Guide to Guitar and Amp Maintenance: A Practical Manual for Every Guitar
Playerâ€ both of which are considered expert reference works. He has also written for Guitar
Player and Guitar World magazines, in which his "In Gear" column was featured for a
number of years. He also plays a prominent role in the Smithsonian Institute video â€œHistory
of the Electric Guitar - A Sound Revolution."
View all posts by Ritchie Fliegler

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One thought on “Where you stand depends on where you sit”

Thanks for the note, Richie. Naturally, you are, as you acknowledge, indeed in a better position than I am to know most of the things you wrote about in your email. I’m also not that surprised that the strategy you described served the company, although I had speculated that it may not have. One of the recurrent themes in this blog, in fact, is that big companies (or relatively big ones, such as Fender and Gibson) absolutely make the choice to bring law suits that are either completely meritless, or whose adverse outcome can readily be predicted, based precisely on strategies such as the one you describe. Your argument is entirely rational from the business point of view, and while my guess about what did or did not make medium-run sense for these companies was wrong, you do confirm my overall thesis: Companies such as the ones you formerly were involved with will spend huge sums on meritless lawsuits against much smaller competitors, figuring:

the cost of litigation is unlikely to have an impact on our financials

the cost to our much-smaller adversary may get the job of discouraging competition that comes to close to our self-defined comfort zone done all by itself;

an adverse judgment against us on an issue where we’re pushing the envelope anyway is no threat to our core IP properties; and

win, lose or draw, companies will use the court system to “prove we’re serious about protecting what’s oursâ€¦ “

— because even if the courts ultimately don’t agree it really is “ours,” well, bringing a meritless legal claim “resulted in a significant increase in business and income far in excess of the case costs, which were marginal to begin with.”

But I don’t feel like such a fool, nor am I convinced that I look like such a dope to the majority of readers of this humble offering. Of course, I’m biased — which makes two of us. I’m glad to have made your acquaintance, though. Can you maybe get me a good price on a new bass?

About the Title: The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. I write here about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.

As for me, I'm Ron Coleman, an AV-rated partner at Archer - Attorneys at Law,** a firm of about 180 attorneys with offices in NJ, NY, PA and DE (but active nationwide). I've been called an "IP maven" but I'm really a commercial litigator with a special interest in copyright and trademark infringement claims involving the Internet, including advising clients how to avoid them or - if necessary - how to make the other guy wish he had.

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